USPTO Patents Application 10823245

United States Patent and Trademark Office

UNITED STATICS DEPARTMENT OK COMMERCE:
United States Potent and Trademark Office
Address: COMMISSIONER FOR PATH NTS
P.O. Box 1450

Alexandria, Virginia 223 J 3- 1 450
WWWMJSplO.tfOV

APPLICATION "NO.

PILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

10/823.245

04/12/201)4

KreisJcr S. Lau

30-5025 DTV2-4780

4066

7590

03/22/2(105

Bingham McCutchen LLP

18th Floor

600 Anton Blvd.

Costa Mesa, CA 92626

EXAMINER

TRUONG. DUG

ART UNIT

PAPER NUMBER

DATE MAILED: 03/220005

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Office Action Summary

Application No.

10/823,245

Applicant(s)

LAU ET AL

Pvaminor

cxdrriiner
Due Truong

Art Unit

1711

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -

Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1 .704(b).

Status

1)D Responsive to communication(s) filed on .

2a)D This action is FINAL. 2b)K This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) 03 Claim(s) 35-49 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6) ^ Claim(s) 35-49 is/are rejected.

7) Q Claim(s) is/are objected to.

8) D Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) D The specification is objected to by the Examiner.

10)D The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).

Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
11 )□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)D All b)D Some * c)D None of:

1 .□ Certified copies of the priority documents have been received.

2.D Certified copies of the priority documents have been received in Application No. .

3-D Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1) Notice of References Cited (PTO-892)

2) O Notice of Draftsperson's Patent Drawing Review (PTO-948)

3) O Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08)

Paper No(s)/Mail Date .

4) O Interview Summary (PTO-413)

Paper No(s)/Mail Date. .

5) [H Notice of Informal Patent Application (PTO-152)

6) □ Other: .

U.S. Patent and Trademark Office
PTOL-326 (Rev. 1-04)

Office Action Summary

Part of Paper No./Mail Date 031705

Application/Control Number: 10/823,245

Page 2

Art Unit: 1711

DETAILED ACTION
Double Patenting

The nonstatutory double patenting rejection is based on a judicially created
doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
unjustified or improper timewise extension of the "right to exclude" granted by a patent
and to prevent possible harassment by multiple assignees. See In re Goodman, 1 1
F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225
USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA
1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970);and, In re Thorington,
418 F.2d 528, 1 63 USPQ 644 (CCPA 1 969).

A timely filed terminal disclaimer in compliance with 37 CFR 1 .321(c) may be
used to overcome an actual or provisional rejection based on a nonstatutory double
patenting ground provided the conflicting application or patent is shown to be commonly
owned with this application. See 37 CFR 1 .1 30(b).

Effective January 1 , 1994, a registered attorney or agent of record may sign a
terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
37 CFR 3.73(b).

Claims 35-49 are rejected under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claims 1 1-13 of U.S. Patent No.
6,469,123. Although the conflicting claims are not identical, they are not patentably
distinct from each other because for the following reasons:

(1 ) Claimed thermosetting monomer of the reference is included in the instant
claim 35, a low dielectric constant polymer comprising said thermosetting monomer,.

(2) claim 1 1 of the reference does disclose "wherein at least one of the aryl, the
branched aryl, and the arylene ether has a triple bond;" but does not disclose a further
requirement from the instant claims —that participates to form at least part of the
polymer™, However, based on chemical structure of said thermosetting monomer, this
characteristic must be considered inherent in the prior art ,

Application/Control Number: 10/823,245 Page 3

Art Unit: 1711

(3) the only difference between claim 45 of the instant claim and claim 1 3 of the
reference is the center atom, a Carbon in the reference has been replace by a Si in the
instant claim 45. However, they are equivalent since they all require four covalent
bonds.

Therefore, it would have been obvious to one of ordinary skill in the art to modify the
monomer from the reference within the limitation of the instant claims, based on the
same functionality, since they have been shown to be effective in a similar system and
thus would have been expected to provide adequate results. There is no showing of
unexpected results derived from said modification.

Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Due Truong whose telephone number is 571-272-1081.
The examiner can normally be reached on Monday-Friday.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, James Seidleck can be reached on 571-272-1078. The fax phone number
for the organization where this application or proceeding is assigned is 703-872-9306.

Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free).

DUC TRUONG
PRIMARY EXAMINER